20/01/2016
In recent years, it has become increasingly difficult to register compound marks which combine basic figurative features with a descriptive word element. In turn, it has become very hard to overturn objections based on grounds that the figurative elements of a compound mark are too simple or minimal to render the mark distinctive. The question of whether figurative elements will be sufficient to render a compound mark distinctive has become a grey area in both UK and European Community trade mark practice.
On the quest for clarity, consistency and certainty, The European Trade Mark and Design Network have issued the “Common Communication on the Common Practice of Distinctiveness – Figurative Marks containing descriptive / non-distinctive words”. These practices were adopted by the UK Intellectual Property Office (UKIPO) on 2 October 2015. Office for Harmonization in the Internal Market (OHIM) will follow suit this month (January 2016).
According to The European Trade Mark and Design Network, what is the threshold for figurative elements to be capable of bestowing a mark with distinctiveness? A number of examples have been considered in the communication:
- Specific typefaces will only help a mark be deemed distinctive if the typeface has elements of graphic design which can distract consumers from the descriptiveness of the word, or leave a lasting impression in the mind of the relevant consumer.
- Adding single colours to a descriptive / non-distinctive word element, or as a background, will not be enough. A combination of colours may be sufficient, as long as it is unusual and easily remembered.
- Commonly used symbols or punctuation marks will not generally be considered sufficient to render a mark distinctive.
- Arrangement of descriptive word elements in vertical, upside-down positions, or in one or more lines will also be deemed insufficient. Only arrangements of words which provide a focus beyond the descriptiveness of the message will escape being held too simple or minimal.
- Simple geometric shapes just won’t cut it, unless their presentation, configuration or combination with other elements of the mark changes the impression of the mark adequately.
- Figurative elements which portray or symbolic of goods and service will not be sufficient. Sufficiently stylised figurative elements may, however, cross the threshold into distinctiveness even if they are directly linked to the characteristics of the goods and services.
- If a figurative element is distinctive itself, it will render a mark distinctive as long as it is clearly recognisable in the sign due to its size and position.
- Figurative elements commonly used or customary in trade will not be sufficient.
In summary, a mark will not be held capable of registration if both the figurative and word elements lack distinctive character. The fact that the two elements have been combined will not be enough to endow the mark with distinctiveness. The composition of the mark needs to be held to create an overall impression which is sufficiently far from the descriptive or non-distinctive meaning of the word element for a mark to be deemed distinctive.
The European Trade Mark and Design Network have provided a number of helpful example marks which illustrate the principles laid down in the practice note. Time will tell whether borderline cases, which do not fall quite so neatly into the realms of distinctiveness or non-distinctiveness, will remain an area of uncertainty for practitioners and right-holders.
(“Common Communication on the Common Practice of Distinctiveness – Figurative Marks containing descriptive / non-distinctive words”, European Trade Mark and Design Network, 2 October 2015, pp 2-5)
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
